As reported by the Law and Magic blog the famously silent magician Teller is suing a Dutch magician for copyright infringement. The suit concerns Teller’s remarkable trick illusion Shadows, in which he cuts the shadow of a rose, causing petals to fall off of the real rose that is casting the shadow.

The leading academic paper here is Jacob Loshin’s Secrets Revealed. (He also gave a wonderful talk at New York Law School as part of our “IP Surprise” lecture series on intellectual property in unexpected industries.) He argues that magicians rely on informal enforcement mechanisms because copyright is a bad fit for magic tricks. The leading case is Rice v. Fox Broadcasting, aka, the “Mystery Magician” case, although it’s not really quite on point. It was a copyright infringement case brought by “the “Mystery Magician,” who sold a videotape showing how various tricks were done, against Fox, which aired a series of how-tricks-are-done TV specials. He lost. The idea of showing how tricks are done is too abstract and too commonplace to support a copyright; “an overall mood of secrecy and mystery” is inherent in a show on the subject. Everything else about the Fox specials, from the dialogue to the character of the magician, was sufficiently different that there was no infringement.

The defendant, a professional magician with a long-term engagement at a hotel in the Canary Islands, made a YouTube video (now offline thanks to a DMCA takedown) of himself performing Shadows, which he described as “my version”of the “great Penn & Teller performing a similar trick.”

How similar is his version? It’s impossible to say without the video. From the low-res pictures in the ad, it appears that the details of the staging may be different. No cheesy red curtains for Teller.

The version described in the copyright registration (pages 5-6) consists of stage directions and a single illustration. This raises a subtle question of what the “work” protected by copyright is, and whether Teller’s registration can support anything beyond the four corners of the stage directions. That would potentially exclude a lot of telling, highly characteristic details from the similarity comparison.

The Copyright Act of 1976 confers copyright on many categories of works, including pantomimes and choreographic works. I’m unaware of any cases under the Act about pantomimes, so this may well be the first. But the lawsuit refers to it as a “dramatic” work.

The complaint argues that the defendant is planning to “sell” the trick for $3000. I don’t speak Dutch, so I can’t quite tell what is being sold. $3000 seems incredibly high for a video, so I doubt it’s that. If it’s the secret behind the trick, I don’t see how there could be a copyright infringement. As Loshin points out, these are uncopyrightable ideas.

Perhaps he’s selling a kit to enable you to do the trick yourself. That wouldn’t infringe either; it’s not substantially similar to the the stage directions, nor is it a market substitute for them. You could make a derivative works argument, perhaps akin to the Seinfeld Aptitude Test case, but I think you would still lose: a kit wouldn’t be a copy of the expression in the trick itself. And in any event, there’s a Baker v. Selden problem: any expression in the the kit is necessarily incident to the idea of how the trick is done, and is therefore uncopyrightable.

Teller offered to buy the defendant out, but they couldn’t come to terms.

Is Teller upset at having the secret to the trick revealed? That seems uncharacteristic, given the glee with which Penn and Teller show the audience how (some) tricks are done. Is he upset that his rendition of the trick is being mimicked? He shouldn’t be: no one is going to be able to come close to the way he can raise an eyebrow with profound emotional effect. Does he want to keep anyone else from doing a rose-and-shadow trick? That would be … unfortunate.

The complaint also includes a Lanham Act § 43(a) claim for false designation of origin or false statement of fact, which I can only describe as “dead on arrival” in light of Dastar. This is precisely the situation Dastar was designed to address: Teller’s § 43(a) claim is based on exactly the same conduct—unauthorized performances of Shadows—as his copyright claim. Teller is not the “origin” of Shadows.

I can’t imagine that the defendant, a Dutchman who works in Spain, is eager to defend himself in the District of Nevada. The jurisdictional issues here could be interesting.

I will be watching the case with interest, but my initial sense is that Teller has an uphill fight on his hands, should the defendant choose to contest the case.

UPDATE: After some time with Google Translate, I think he’s selling a kit. “Volledig zelfwerkend!” was the giveaway phrase.

UPDATE: In the comments, Jay Doughtery quite correctly points out that I missed an even more on point piece about magic and copyright: his own “Now You Own It, Now You Don’t: Copyright and Related Rights in Magic Productions and Performances.” It’s also published in Law and Magic. My apologies to Jay and to my readers.

Can Teller really pursue this litigation without ever revealing how he does his trick? I guess during discovery he could seek a trade-secret-like protective order, but it seems pretty important for him to prove that the process of the trick, and not just its outcome, has been duplicated.

Hi Jim. With all due respect to Jacob and his interesting paper, its focus is on extra-legal systems for protecting magic. The leading academic paper on the subject here actually is my article “Now You Own It, Now You Don’t: Copyright and Related Rights in Magic Productions and Performances,” also publishe in the same collection, a book entitled “Law and Magic: A Collection of Essays.” My article give the history and explores many of the interesting issues around copyright (and in some countries, performers’ rights) in magic. I think your comments are good, for the most part. To play devil’s (or Teller’s) advocate for a moment: it is possible that his “act”, assuming it is original (which I gather it is), is a protectible “pantomime”. As you note there’s no case law (my article explores some interesting early cases dealing with questions of “dramatic” work, and points out some decisions protecting somewhat comparable magic routines in films). The Compendium II defines pantomime as “the art of imitating or acting out situations, characters or some othe revents with gestures and body movement”. There’s some more discussion of that in my article. Teller has a registration of something like a script here, which claims a pantomime, so he may have presumptive validity. If he does have copyright, it would include the right to publicly perform the work, or display the work. Reproducing, distributing and adapting are a little harder to see in this context, although adapting/preparation of a derivative work seems possible (no fixation necessary, at least per the House Report). I suspect this will resolve on other grounds, but it would be great to have a decision, and it could affect a lot of magicians.